Moto Licenses Standards-Essential Patents to Apple in Germany

By Bryan Chaffin

Aug 28th, 2012 9:48 PM EDT

Apple and Motorola Mobility have reached an agreement of sorts for the iOS device maker to license Moto’s standards-essential patents (SEPs) in Germany. The two haven’t come to an agreement on how much Apple will pay, but have agreed to the license—if they can’t come to an agreement, a rate will be set by a German court.

Moto had sued Apple for infringing on its SEPs after Apple refused to pay the licensing fee Moto had asked for—up to 2.25 percent of the retail price of Apple’s iOS devices, according to filings uncovered earlier. Apple accused Motorola Mobility of failing to honor its commitment to license the patents on a fair, reasonable, and non-discriminatory (FRAND) basis, and have left it to court systems around the globe to sort it out.

FOSS Patentsreported on Tuesday that Motorola filed documents with that U.S. court that acknowledge the agreement with Apple, though that agreement is limited to the German market. What isn’t known is when the agreement was reached or if it will have any bearing on negotiations between the two companies in the U.S. and other countries where the two are fighting a patent battle second only to the battle between Apple and Samsung.

Like Samsung, Apple has accused Motorola of infringing on its design and utility patents, patents that are not committed to standards or other FRAND considerations. Like Samsung, Motorola counter sued Apple for infringing its SEP patents in an effort that has been interpreted as attempt to gain leverage against Apple’s seemingly powerful patents.

In the U.S., a jury decided that patent exhaustion protected Apple from infringement claims—in other words, that Apple was covered by the licenses already owned by the companies making the components that used Samsung’s SEP technology. Apple hasn’t not made similar claims in its fight with Moto, arguing instead that Moto had demanded unreasonable rates.

It now seems as if Apple and Motorola have entered into new negotiations on that rate, and that if they can’t reach an agreement, the court will decide what the FRAND rate should be.

This has major implications for the other half of the battle between the two companies, Apple’s claims that Moto is violating its patents. A licensing agreement over the SEP patents means that Motorola (and, by extension, Google, which now owns Motorola Mobility) has little or no leverage to force Apple to license its own patents in Germany should those courts decide that Motorola is infringing them.

That could well mean that Motorola will find itself in the same boat as Samsung, having to design around Apple’s patents.

That said, this is one market and one of many patent battles between Apple and Moto. The German market is a big one—the biggest economy in the European Union, but this is merely one step among many that both companies must make in the long complicated dance of patent infringement claims.